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2002 Supreme(Del) 783
High Court Of Delhi
ESSEL PACKAGING LIMITED - Appellant
Versus
SRIDHAR NARRA - Respondent
Decided On : 05/28/2002
The main legal point established in the judgment is that the prior and continuous use of a trade name provides the exclusive right to use the name, and any unauthorized use by others can lead to confusion and deception in the public, justifying an injunction.
Headnote:
essel - Trade Name Dispute - Order 39 Rule 4 CPC, Order 39 Rule 1 and 2 CPC - Bombay High Court in Essel Packaging Limited and Others Vs. Essel tea Exports Ltd. 1999 PTC (19) 521, Montari oversead Ltd. Vs. Montari Industries Ltd. 1996 PTC (16), Kirloskar Diesel recon. (P) Ltd. and Ors. Vs. Kirloskar Proprietary Ltd. and ors. 1997 PTC (17), Mahindra and Mahindra Ltd. Paper Mills Ltd. vs. Mahindra and mahindra Ltd. 2002 24 PTC 121 S. C. - The court discussed the use and ownership of the trade name 'essel' and its association with the plaintiff, the prior user rights, and the likelihood of confusion and deception in the public.
Fact of the Case:
The plaintiff sought protection of the trade name 'essel' and domain name ESSELSOFT.COM, claiming it as a coined word and synonymous with their group of companies. The defendant argued that the word 'essel' was commonly used by many companies prior to the plaintiff's use.
Finding of the Court:
The court found that the plaintiff had established a prima facie case that the mark 'essel' was a coined word and had been used extensively since 1982, and that any use by the defendants of the word 'essel' was likely to cause confusion to the general public as to its association with the plaintiff.
Issues: The main issue was whether the plaintiff had the exclusive right to use the word 'essel' and whether the defendants' use of the word was likely to cause confusion and deception in the public.
Ratio Decidendi: The court held that the plaintiff's prior and continuous use of the word 'essel' provided them with the exclusive right to use the word, and any unauthorized use by the defendants was not a defense. The court also emphasized that the non-registration of a trademark was of no consequence in a passing off action.
Final Decision: The court dismissed the defendant's application under Order 39 Rule 4 CPC and allowed the plaintiff's application under Order 39 Rule 1 and 2, confirming and making absolute the ex parte injunction restraining the defendants, including defendant no. 3.
( 1 ) THIS order shall dispose of the application under Order 39 Rule 4 CPC moved by the defendant no. 3 and application under Order 39 Rule 1 and 2 CPC filed by the plaintiff as both these applications are interlinked and fate of one shall decide the fate of the other.
( 2 ) THE question that calls for determination is whether the word essel is one of the most commonly used name in the business and trading in India and, therefore. plaintiff/applicant has no sole proprietary right to use the same and restrain others from using it in any kind of business activities as the defendant no. 3 has taken the stand that this word is being commonly used by large number of persons in business and other activities and that not less than 150 companies are using the name/mark essel.
( 3 ) PLAINTIFF seeks protection of the trade name essel as well as domain name ESSELSOFT. COM mainly on the following premises:-
I) That the plaintiff founded the companies with prefix ESSEL in 1982 and has been a pioneer in the manufacture of fully collapsible laminated tubes, co-extruded seamless tubes and laminates and is part of us$ one billion Essel Group which has interests in media/entertainment, telecom, trading and property development. The plaintiff is the market leader in India with a manufacturing capability of one billion tubes.
II) That the word ESSEL was coined by the plaintiff. Word "ess" is the first essential character of the name Subhash Chander, the Chairman of the plaintiff s various companies and the word "el" is the first character of the name Laxmi Narayan Goel, the brother of Subhash chandra and a Director of various plaintiffs companies. It is neither a dictionary word nor a surname nor a descriptive word.
III) That the word essel has become synonymous with plaintiffs group of companies and therefore use of the word ESSEL by any party irrespective of the fact whether it is being used in different field of activity is not permissible as it amounts to offence of passing off as it creates confusion and deception in the minds of unwary customers as to its source or origin.
(IV) Similarly the plaintiff is also the owner of domain name ESSEL. COM, ESSELPACKAGING. COM AND esselworld. COM. The internet printout of "google" shows that out of the top 50 search results relating to Essel in india, 45 search results relate to the plaintiff and its group companies. This itself demonstrates the primacy and proprietorship of the plaintiff over the word ESSEL.
(V) That the use by the defendants of the domain name ESSELSOFT. COM is likely to create confusion and deception leading internet users to believe that the defendants are connected with the plaintiff.
(VI) That the registration of the said domain by the defendants is unlawful, illegal and is a "bad faith" registration as defined in the uniform Domain Name dispute Resolution Policy framed and adopted by the ICANN (Internet Corporation for Assigned Names and Numbers) with malafide motive to take undue advantage from the well established reputation and goodwill of the plaintiff.
(VII) That the intention of the defendant in using the word ESSEL in the field of software is obviously malafide and is prejudicial to the interest of the plaintiff as they want to trade upon the worth, goodwill and reputation of trading name of the plaintiff which has been earned by spending huge sums by way of advertisements in various newspapers, print media and electronic media.
( 4 ) ON the other hand defendants have made all out efforts to protect their right to use the mark ESSEL as they claim to be the bonafide users of the domain name essel soft. com and do not in any manner compete or trade in similar goods as that of the plaintiffs. Put briefly the defences set up by them are as under :-
1) That the use of the word ESSEL on the world-wide web does not solely relate to the business of the plaintiff. The plaintiff does not have proprietary rights over the word ESSEL, Neither was it coined by it nor i
